‘El Pelusa’ turns prickly
With the nickname El Pelusa (Fluffy), one quickly thinks of Maradona, one of the best soccer players the world has known.
There is no doubt that Maradona has great appeal and, therefore, great brand potential. Who doesn't want to hitch a ride on his fame?
Maradona's former lawyer must have thought so too, and he registered the Maradona trademark in his own name. Probably you can buy licenses from him: for a fee you can use the Maradona name for certain products. A nice revenue model. But on the other hand, licenses are often also necessary to maintain trademark rights for all kind of products: because without use, there is no right with a trademark registered for more than 5 years.
Recently, a company from the United Arab Emirates applied for a trademark in the European Union consisting of a cartoonish image of Maradona. With the text Dieguito underneath. This company thought it could bypass the lawyer's trademark right. But the lawyer filed an opposition based on his trademark Maradona.
In this opposition, two interesting trademark law questions will have to be answered:
Is the Maradona trademark, which now has an obligation to use, being used? And if so, for what products and services? (If the attorney fails to prove use, the opposition is already rejected on this ground).
Now that the word Dieguito and Maradona are not visually and aurally similar, is the mere conceptual similarity sufficient to assume confusion? Usually, it is not (a dog logo cannot prevent the registration of another dog logo when there is no visual similarity between them. So just the fact that they are two dog logos is not enough).
Secretly, we hope the Maradona trademark is sufficiently used. Because answering question 2 is much more interesting. To be continued!
Author: Arnaud Bos
Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.